Sections 117-128: Restoration of patents and patent applications

Introduction

1. This guideline outlines IPONZ practice for processing requests for restoration.

2. Where a patent or patent application is lapsed, abandoned or void due to a patentee or applicant failing to meet a deadline, the patentee or applicant may request restoration.

3. If a patent or patent application is successfully restored, regulations 115 and 121 prescribe limitations on being able to enforce it against persons who availed themselves of the invention while it was lapsed, abandoned or void.

4. The Commissioner will consider whether the restoration request meets the requirements under the Patents Act 2013 and the Patents Regulations 2014.

5. Basic requirements for successful restoration are:

• the failure was unintentional,
• the request is made within the prescribed period or the Commissioner is satisfied that there was no undue delay in making the request,
• formal evidence is filed with the request,
• payment of restoration request fee and any outstanding fees, and
• responding to any task sent with the restoration order appropriately and within time allowed.

Case law which may be considered persuasive

6. Published decisions of the Commissioner and New Zealand court cases decided under the Patents Act 1953 may be considered persuasive where relevant provisions of the Act align. Published decisions of other offices such as the United Kingdom will be considered similarly.

1. Restoration of lapsed patents

Relevant parts of Act and Regulations

7. Sections 117-124 and regulations 110-115 and 144 apply.

How a patent lapses

8. A patent will lapse if the patentee fails to pay the renewal fee within the time allowed (sections 20(2) and 21, and regulation 8(3)) and may be restored upon request, subject to requirements as further discussed.

Restoration request requirements

9. The restoration request must include:

• the date the renewal fee was due (regulation 110(1)),
• a statement fully setting out the circumstances that led to the failure (section 118(1)),
• if the request is made after 12 months from the date the renewal fee was due, a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue (section 120(3) and regulation 111(2)),
• evidence in support of the request in the form of a statutory declaration or affidavit (regulation 110(1) and regulation 144),
• the number of any patent of addition to the patent also sought to be restored (regulation 110(1)), and
• payment of the restoration request fee (regulation 5).

10. The evidence may contain the circumstances and information above and typically does.

2. Restoration of abandoned or void patent applications

Relevant parts of Act and Regulations

11. Sections 125-128 and regulations 116-121 and 144 apply.

How an accepted patent application is deemed abandoned

12. An accepted patent application not yet granted is deemed abandoned if the applicant fails to pay a maintenance fee within the time allowed (section 35).

How a patent application (pre-acceptance) can go void or abandoned

13. Patent applications that are yet to be accepted can be deemed abandoned or void if the applicant fails to meet one of the following requirements within the time allowed:

• request entry into national phase under section 51(1)(d) or (e),
• pay a maintenance fee under section 35,
• request examination when directed under section 64,
• respond to an examination report under section 68,
• put the application in order for acceptance under section 71, and/or
• file a Notice of Entitlement under section 73

14. In any of the above situations a patent application may be restored on request (section 125), subject to requirements and conditions as further discussed.

Restoration request requirements

15. The restoration request must include:

• a statement fully setting out the circumstances that led to the failure (section 125(3)),
• if the request is made after 12 months from the maintenance fee date or when the application is considered void or abandoned, a statement that fully sets out the circumstances that caused the delay and the reasons why the delay is not undue (section 126(3) and regulation 117(2)),
• evidence in support of the request in the form of a statutory declaration or affidavit (regulation 116(1) and regulation 144), and
• payment of the restoration request fee (regulation 5).

16. The evidence may contain the statement setting out the circumstances and information above and typically does.

3. General requirements for restorations

17. Due to similar requirements the following applies to both the restoration of patents and patent applications as appropriate.

Evidence

18. Formal evidence must be provided to support the restoration request. The evidence must:

• be consistent and plausible,
• establish authority from the applicant including any chain of authorisation,
• be from a person or persons with first-hand knowledge of the circumstances leading to the failure, and where applicable the delay in making the request, and
• include copies of any documents relied on, typically these are attached as exhibits to the statutory declaration or affidavit.

19. Regulation 144 requires any evidence supplied for the purpose of the regulations to be in the form of a statutory declaration or affidavit. See the Hearings evidence guidance for more information about statutory declarations and affidavits, and who can take (witness) them.

20. If a patentee or applicant fails to file evidence with the initial restoration request, IPONZ will notify the patentee or applicant and give them 5 working days to provide it. IPONZ will deem the official date of the restoration request to be from when the evidence is received. If evidence is not filed within this time the request will be declined.

21. One or more statutory declarations of affidavits may combine evidence of intention and delay.

Unintentional

22. Sections 117(2) and 125(4) require the Commissioner to be satisfied that the failure was unintentional as a necessary precondition for restoration. The following are examples where the meaning of unintentional was considered:

• A mere statement from the patentee that the failure was unintentional is insufficient to allow the Commissioner to be satisfied the failure was unintentional. See Matsushita Electric Industrial Co. v Comptroller General of Patents [2008] EWHC 2071 (Pat).
• A decision not to pay a fee cannot be seen as unintentional. In Land's Patent 27 RPC 481 Parker J noted:
  “In order that an omission to pay a fee should be intentional it is only necessary that it should be present in the mind of the person who has to pay the fee, that the fee is payable, and that he should deliberately elect not to pay it.”
• Further noted in Land’s Patent a failure to pay a fee arising from a misunderstanding of the law does not constitute an unintentional failure.
  “It does not provide for the case where the man deliberately elects not to pay the fee under an erroneous supposition, which influences his conduct.”
• The Commissioner will generally base the intention of a patentee to renew a patent by the actions of a person who is acting on its behalf unless it is established the actions were contrary to a clear intention of the patentee. See Processed Surface's Patent [1958] RPC 480, Witton Engineering's Patent [1959] RPC 53 and General Electric's Patent [1973] RPC 707.
• The restoration process is not intended to be used as a mechanism to extend time to resolve objections raised during examination. In Rong Peng Guo [2017] NZIPOPAT 24 (12 December 2017) it was noted at paragraphs 18 and 20:
  “A request for reinstatement is not the appropriate forum to resolve the validity of the objections raised by the examiner … Nor can s 125 be used as a ‘backdoor’ process to obtain an extension of the deadline in s 71, to allow the applicant further time to file further amendments or arguments as to why the issues raised by the examiner should not prevent acceptance.
  ...
  Additionally an overall motivation of an applicant to gain a patent should not be conflated with reasons why failure to comply with particular requirements of the Act has occurred. “Unintentional” in this context refers to failures that are accidental or inadvertent. “

Undue delay

23. The prescribed period in which a patentee or applicant can request restoration is 12 months from the date:

• the renewal fee becomes due under regulation 8(3), or
• the maintenance fee becomes due under regulation 8(2), or
• the patent application is considered void or abandoned due to failure to meet any other requirement set out at [13] above.

24. The prescribed period is always taken to start from the date the renewal or maintenance fee was due, not any subsequently extended period of up to 6 months under section 21(1) or regulation 9(1)(b).

25. The Commissioner has the power under sections 120(2) or 126(2) to extend the prescribed period for requesting restoration if satisfied there has been no ‘undue delay’ on the part of the patentee or applicant.

26. In order to satisfy the Commissioner there has been no undue delay, the patentee or applicant must file a statement that fully sets out the circumstances that caused the delay (sections 120(3) or 126(3), and regulations 111(2) or 117(2)). This should include the reasons why the delay is not ‘undue’ and evidence in support of the extension request.

27. Undue delay should be considered as in Salopian Engineers [1957] RPC 351 “not from the time of, lapse of a patent, but from the time when the patentee discovered, or might with ordinary and reasonable care have discovered, the omission”. This dictum has been followed in several New Zealand decisions including Owens-Illinois Inc [1981] NZIPOPAT 6 and Anthony Charles Worrallo [1989] NZIPOPAT 3.

28. A patentee or applicant can readily inspect the status of a patent or patent application online in real time. This may form part of the consideration of ordinary and reasonable care as described above, therefore the patentee or applicant will need to provide convincing reasons to establish that any delay is not undue.

Who can make a request for restoration

29. Section 119(1) requires restoration request to be made by the person who was the patentee, or if the patentee is deceased that person’s personal representative. Likewise, section 125(2) requires the person making the request to be the applicant.

30. Section 5 defines “patentee” as the person entered in the register as the grantee of a patent at the relevant time and “applicant” as the person who has applied for a patent and includes a person in whose favour a direction has been given under section 28(2)(b)(i), 129 or 131(1)(a), or a personal representative of a deceased applicant.

31. Where a patent has been assigned prior to lapse, the assignment itself does not change who was recorded as being the patentee at the time of lapse. Unless the assignment is requested and/or registered prior to the date of lapse, it is the assignor who must request restoration regardless of when the assignment was executed. An assignment that has been subsequently registered after lapse will also not change who can make the request for restoration.

32. Likewise for patent applications, if a direction has not been given under s28(2)(b)(i), 129 or 131(1)(a) prior to the application being deemed abandoned or void, this does not change who was recorded as being the applicant at the time the application is deemed abandoned or void.

33. If the patent was granted to a deceased person or to a body corporate which had ceased to exist, the personal representative of the patentee can make the request for restoration. The representative will need to provide evidence that they are the personal representative of the patentee. Once the patent has been restored, an application under Section 105 can then be made.

34. A patentee or applicant who has had a change of name which has not been registered may need to prove identity as part of the restoration process. If the change of name occurred prior to lapse, abandonment or void, the patentee or applicant should first apply to record the change of name prior to restoration. If the change of name was after such time restoration should be requested first, the patentee or applicant can then request a change of name.

35. The following is provided as an example of who may make a restoration request where an assignment has occurred:

Assignor A assigns a patent to assignee B at date X.

Assignment and lapse dates	Who can request restoration
Lapse date Y is after assignment date X	Alternative 1: At time of lapse if the assignment was not registered or requested to be registered then A must request restoration.   Alternative 2: At time of lapse if the assignment was registered or requested to be registered then B must request restoration.
Lapse date Y is before assignment date X	Only A can request restoration as patentee at time of lapse.

Similar requirements apply to who can make a request for restoration of a patent application.

Patentee or applicant may request restoration more than once

36. Further restoration requests may be allowed:

• when a lapsed patent or an abandoned or void patent application has been restored previously, or
• if the patentee or applicant fails to pay any outstanding renewal or maintenance fee(s) within the one month period specified in a notification from IPONZ.

37. The Commissioner considers each request on a case by case basis.

Patent of addition

38. It is not possible to restore a patent of addition without also restoring its corresponding main patent.

39. Where a failure to pay a renewal fee on a main patent leads to the main patent lapsing, this will also lead to lapsing of the patent of addition. In such circumstances section 117(2) allows for both the patent and the patent of addition to be restored in the same restoration request.

40. An application for a patent of addition is treated the same as other patent applications with regard to restoration requests.

4. Assessment of restoration requests

41. When assessing a restoration request the Commissioner will consider the request and evidence and will:

• require further evidence,
• refuse the request, or
• allow the request subject to any opposition and payment of outstanding renewal or maintenance fee(s).

42. The Commissioner may require further evidence where initial evidence does not satisfactorily establish the grounds for restoration. Additionally the patentee or applicant can voluntarily file further evidence.

43. Further evidence should be filed within 3 months from the date of the request for restoration. A further 1 month extension is available for providing further evidence if requested before the expiry of the 3 month period.

44. If the request includes initial evidence in the form of a statutory declaration or affidavit the Commissioner will only decline such a request after allowing the patentee or applicant the opportunity to file further evidence (see regulations 110, 111, 116 and 117).

5. Publication of restoration requests

45. If the Commissioner is satisfied the patentee or applicant has made out a prima facie case for restoration, the Commissioner will publish the restoration request in the Journal (sections 122 and 125(4)).

46. If the Commissioner is not satisfied that a prima facie case for restoration has been made out, the Commissioner will give the patentee or applicant a reasonable opportunity to be heard on the matter under section 121. If a patentee or applicant requires a hearing they must request this within 10 working days. A hearing will then be scheduled by the IPONZ Hearings Office.

6. Opposition to restoration

47. Where the Commissioner proposes to restore a patent, section 123(1) provides that any person may oppose the restoration on either or both of the following grounds:

• the failure to pay the renewal fee was not unintentional, or
• where the request is made in an extended period under section 120 that there was undue delay.

48. In the case of a patent application, section 127(1) provides that any person may oppose the restoration on either or both of following grounds:

• the failure causing abandonment or voiding was not unintentional, or
• where the request is made in the extended period under section 126 that there was undue delay.

49. Regulations 112(1) and 118(1) require the opponent to file their notice of opposition setting out their grounds, and a statement of case, within 2 months from the publication in the journal.

50. Other requirements for opposition are found in sections 123 and 127 and regulations 112-114 and 118-120. Further information about oppositions and the hearings process is also provided on the IPONZ website at Patent hearings.

7. Process following publication

51. If following publication a restoration request is not opposed, or an opposition is unsuccessful, IPONZ will notify the patentee or applicant that they need to pay any outstanding renewal or maintenance fee(s) within a 1 month deadline. Failure to pay any outstanding fee(s) within this period will result in the restoration request being deemed abandoned

52. Once the patentee or applicant pays any outstanding fee(s), the Commissioner will issue a restoration order.

8. Restoration orders

Patents

53. An order for restoration of a patent may include conditions as set out in section 124(2). The order for restoration is subject to the provisions for protection or compensation of persons who availed themselves (see section 124(2)(b)).

54. If the patentee does not comply with conditions of the order the Commissioner may revoke the order, and give any consequential directions, subject to offering the patentee an opportunity to be heard.

Patent applications

55. An order for restoration of an application under section 128 will extend the period for complying with the requirements imposed on the applicant by the Act or the Patent Cooperation Treaty (as applicable). The order for restoration is subject to the provisions for protection or compensation of any persons who had availed themselves (see section 128(2)).

56. The restoration order will specify a 1 month deadline by which the applicant must address any outstanding requirements, or else the application is deemed abandoned.

57. An example is where an applicant fails to respond to an examination report by a deadline resulting in the application being deemed abandoned under section 68. At the time of issuing of the restoration order the time to put the application in order under section 71, and/or the time to file a notice of entitlement under section 73 may have expired. The applicant must address such requirements within the 1 month period.

58. As another example, if an application was abandoned because examination was not requested within the 2 month period following a direction to request examination, then the applicant must request examination within the 1 month period.

59. A failure to request examination within 5 years from the complete specification filing date does not result in the application being deemed abandoned or void. Typically the application will be deemed abandoned or void due to a subsequent failure to pay a maintenance fee. In such cases, the request for restoration should include details on why examination was not requested within the 5 year period. The Commissioner may then extend the period for requesting examination as part of the restoration process. If these details are not provided with the restoration request, this may result in the application being restored without the ability for the applicant to request examination.

60. The 1 month deadline in the restoration order does not affect previously set statutory deadlines which expire more than 1 month from the date of the restoration order, or deadlines yet to be set. Thus, when a restoration order is issued and a deadline for section 71 has previously been set at a date later than the 1 month period set out in the restoration order, then the applicant is required to comply with the section 71 deadline as previously set.

61. If the applicant does not comply with conditions of the order within the time allowed the Commissioner may revoke the order subject to offering the applicant an opportunity to be heard under section 208.

9. Processes for restoration via the Case Management Facility (CMF)

Restoration of a patent

62. When a patent lapses, IPONZ issues a notification advising that this is due to the applicant failing to pay a renewal fee within time allowed.

63. If the patentee requests restoration, the Commissioner considers the request and if the request is prima facie allowable, IPONZ publishes the request in the journal.

64. The CMF monitors the opposition period. If there has been no opposition or an opposition is unsuccessful, the CMF checks for any renewal fees outstanding.

65. IPONZ sends a notification to the patentee informing that:

• no opposition or opposition unsuccessful,
• the patent will be restored subject to payment of renewal fee(s), and
• a one month period is allowed to pay any outstanding renewal fee(s), otherwise the patent is not restored.

66. If the outstanding renewal fee(s) are paid within the time allowed, IPONZ issues a renewal fee receipt and a Restoration Order.

Restoration of a patent application

67. When a patent application is abandoned or voided, IPONZ issues a notification advising that this is due to the applicant failing to:

• pay a maintenance fee within time allowed, or
• comply with other requirements in section 125(1) as noted previously.

68. If the applicant requests restoration, the Commissioner considers the restoration request and if the request is prima facie allowable, IPONZ publishes the request in the journal.

69. The CMF monitors the opposition period. If there has been no opposition or an opposition is unsuccessful, the CMF checks for any maintenance fees outstanding.

70. IPONZ sends a notification to the applicant informing that:

• no opposition or opposition unsuccessful,
• the need to pay any outstanding maintenance fees within a 1 month deadline otherwise the application remains abandoned, and
• how to pay the fee(s).

71. Once the applicant pays any outstanding fee(s) IPONZ sends a notification informing the applicant that:

• the application has been restored,
• a restoration order is attached allowing 1 month to address any outstanding requirements, and
• an appropriate task is sent to the applicant with the restoration order.

72. The task sent depends on the progress of the application before the failure and may be as follows:

• If a direction to request examination has not been issued earlier, a “request examination” task is sent. The due date will be either the 5 year time limit allowed under section 64/regulation 71 or the 1 month period set in the restoration order, whichever is later. This effectively reinstates a “request examination” task,
• if a direction to request examination has been issued previously, a “request examination” task is sent. The due date will be the 1 month period set in the restoration order,
• where examination has previously been requested but an examination report has not issued, the application will be examined and an examination report will be issued in due course, or
• if the application had previously been examined a “respond to examination report” task is sent with a 1 month time period to address the previously issued report (if consistent with paragraph 60).

73. The applicant should respond in an appropriate and timely manner to the task sent via the CMF. Even if the applicant has fully addressed the outstanding issues the applicant must confirm this in response to the task.

74. Where the application is an accepted patent application it will proceed to grant unless opposed or there are other proceedings to prevent grant.